OPPOSITION DIVISION
OPPOSITION No B 2 767 104
Babysam A/S, Nyholms Allé 3, 1, 2610 Rødovre, Denmark (opponent), represented
by Zacco Denmark A/S, Arne Jacobsens Allé 15, 2300 Copenhagen S, Denmark
(professional representative)
a g a i n s t
Brillux Gmbh & Co. KG, Weseler Str. 401, 48163 Münster, Germany (holder),
represented by Cohausz & Florack Patent- und Rechtsanwälte
Partnerschaftsgesellschaft MbB, Bleichstr. 14, 40211 Düsseldorf, Germany
(professional representative)
On 06/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 767 104 is upheld for all the contested goods, namely
Class 25: Clothing; footwear; headgear; t-shirts; equipment, namely clothing,
footwear and headgear for children and children’s groups.
2. International registration No 1 298 352 is refused protection in respect of the
European Union for all of the contested goods. It may proceed for the
remaining goods and services.
3. The holder bears the costs, fixed at EUR 620.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against some of the goods of international
registrationdesignatingtheEuropeanUnionNo 1 298 352 forthewordmark
‘B-Kids’, namely against all the goods in Class 25. The opposition is based on Danish
trade mark NO VA 2014 00546 (registration No VR 2014 01023) for the word mark
‘BEKIDS’. The opponent invoked Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 767 104 page: 2 of 5
LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the
goods or services in question, under the assumption that they bear the marks in
question, come from the same undertaking or, as the case may be, from
economically linked undertakings. Whether a likelihood of confusion exists depends
on the appreciation in a global assessment of several factors, which are
interdependent. These factors include the similarity of the signs, the similarity of the
goods and services, the distinctiveness of the earlier mark, the distinctive and
dominant elements of the conflicting signs, and the relevant public.
a) The goods
The goods on which the opposition is based are the following:
Class 25: Clothing, footwear, headgear.
The contested goods are the following:
Class 25: Clothing; footwear; headgear; t-shirts; equipment, namely clothing,
footwear and headgear for children and children’s groups.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The term ‘namely’, is used in the holder’s list of goods to show the relationship of
individual goods and services to a broader category, is exclusive and restricts the
scope of protection only to the goods specifically listed.
The contested goods in Class 25 Clothing; footwear; headgear are identically
covered by the opponent´s lists of goods.
The contested t-shirts; equipment, namely clothing for children and children´s groups
fall in the broad category of the opponent´s clothing. Therefore, they are identical.
The contested equipment, namely footwear for children and children’s groups fall in
the broad category of the opponent´s footwear. Therefore, they are identical.
The contested equipment, namely headgear for children and children’s groups fall in
the broad category of the opponent´s headgear. Therefore, they are identical.
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be
reasonably well informed and reasonably observant and circumspect. It should also
be borne in mind that the average consumer’s degree of attention is likely to vary
according to the category of goods or services in question.
In the present case, the goods found to be identical are directed at the public at
large. The degree of attention paid by consumers during the purchase is deemed to
be average.
Decision on Opposition No B 2 767 104 page: 3 of 5
c) The signs
BEKIDS B-Kids
Earlier trade mark Contested sign
The relevant territory is Denmark.
The global appreciation of the visual, aural or conceptual similarity of the marks in
question must be based on the overall impression given by the marks, bearing in
mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95,
Sabèl, EU:C:1997:528, § 23).
The marks are word marks, and therefore the word as such is protected and not its
written form. It is irrelevant whether word marks are represented in small or capital
letters.
English is generally well known and spoken in Denmark, and case-law supports this
finding, see in this regard, 26/11/2008, T-435/07, New Look, EU:T:2008:534, 23.
Further, as seen below, the content of the signs pertains to rather basic English terms
which will be widely understood.
The earlier mark ‘BEKIDS’ will be perceived as formed by two independent but linked
terms ‘BE’ and ‘KIDS’, and consists of an imperative expression, used in English to
tell someone to remain as or act like children. The contested sign ‘B-KIDS’ will be
perceived as the same expression, written in a fanciful way, since it contains a
deliberate, but clearly understood, misspelling (i.e. ‘B-’ instead of ‘BE’)
Taking into account the goods involved, these expressions are of slightly lower than
average distinctive character, as they are somehow allusive of their characteristics
(e.g. goods meant to be used by children).
Visually, the signs share five of their six characters, and differ only in their second
character the letter ‘E’ in the earlier mark, and the hyphen in the contested sign.
The signs are therefore considered to be visually highly similar.
Aurally, the differing part of the marks ‘BE’ and ‘B-’ will be pronounced identically by
the relevant public. Therefore, ‘BEKIDS’ and ‘B-KIDS’ are aurally identical.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. For this part of the public, the marks are
conceptually identical.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
Decision on Opposition No B 2 767 104 page: 4 of 5
d) Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account
in the global assessment of likelihood of confusion.
The opponent argued that the distinctiveness of the earlier right is ‘relatively high’.
Understanding this as a claim for enhanced distinctiveness of the earlier mark, the
opponent did not file any evidence in order to prove such a claim.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its
distinctiveness per se.
As previously remarked, the earlier mark is of slightly lower than average distinctive
character, for being somehow allusive of the characteristics of the goods. However,
since the earlier mark is already registered in the relevant territory, it must be
considered that it enjoys sufficient distinctive character from the perspective of the
relevant consumers.
e) Global assessment, other arguments and conclusion
The goods compared in section a) above have been considered to be identical.
The signs are visually highly similar and aurally and conceptually identical.
The attention paid by consumers (public at large) during the purchase of the goods is
deemed to be average.
Generally in clothes shops customers can themselves either choose the clothes they
wish to buy or be assisted by the sales staff. Whilst oral communication in respect of
the product and the trade mark is not excluded, the choice of the item of clothing is
generally made visually. Therefore, the visual perception of the marks in question will
generally take place prior to purchase. Accordingly the visual aspect plays a greater
role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03-
T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the high visual similarity
between the signs is particularly relevant when assessing the likelihood of confusion
between them.
The average consumer of the category of goods concerned is deemed to be
reasonably well-informed and reasonably observant and circumspect. However, and
according to the principle of imperfect recollection, the average consumer only rarely
has the chance to make a direct comparison between the different marks but must
place his trust in the imperfect picture of them that he has kept in his mind. Based on
this, consumers might believe that the conflicting goods found to be identical come
from the same or economically-linked undertakings.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s Danish trade
mark NO VA 2014 00546 (registration No VR 2014 01023) for the word mark
‘BEKIDS’. It follows that the contested trade mark must be rejected for all the
contested goods.
Decision on Opposition No B 2 767 104 page: 5 of 5
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the holder is the losing party, it must bear the opposition fee as well as the
costs incurred by the opponent in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the
costs to be paid to the opponent are the opposition fee and the costs of
representation, which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Vanessa PAGE María del Carmen SUCH
SANCHEZ
Richard BIANCHI
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 EUTMR, notice of appeal
must be filed in writing at the Office within two months of the date of notification of
this decision. It must be filed in the language of the proceedings in which the decision
subject to appeal was taken. Furthermore, a written statement of the grounds for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.